South Africa: Imagine There's No Protection

The recent spat between Yoko Ono and a Polish drinks company
highlights the importance of registering trade marks.

What happened in this matter was that John Lennon's widow,
Yoko Ono, threatened a small Polish lemonade manufacturer with
legal action. The issue? The product that the Polish company sells
in a number of European countries is called John Lemon. If this had
been all, it's conceivable that Ono may have reacted
magnanimously, viewing the man behind the company as a
working-class hero. There was, however, something in the way the
Polish company used other things – imagery of John Lennon,
imagery of John Lennon-style spectacles and the expression Let
it Be – that made it abundantly clear that it simply saw
the former Beatle as a ticket to ride. It was these things that
made it impossible for Ono to give peace a chance. It was these
things that caused her to – dare we say it – act a bit
like a jealous guy!

Ono's claim was that the product infringed both trade mark
rights and certain personal rights. The Polish company considered
the threat carefully and decided on a simple strategy – we
can work it out! The deal that the parties reached is simple
– existing stocks are to be phased out by the end of October
2017 and the name of the product will be changed to On Lemon. For
the Polish company, it will be just like starting over. It clearly
isn't happy – it's made it known that the only reason
it settled the case is that it doesn't have the money to travel
the long and winding road that is trade mark litigation. Mind games
... forever!

The Polish company's impecunity is perhaps fortunate for
Ono, because the trade mark position isn't very clear at all
– although there is a European trade mark registration for
John Lennon, this is in fact predated by a European trade mark
registration that the Polish company has for John Lemon. Although
there are other possible causes of action, these are generally
somewhat problematic. If the Polish company hadn't settled this
case, Ono may well have needed help.

What are these other causes of action? Some countries recognise
rights that are sometimes loosely known as "image
rights", but there's not a great deal of uniformity. In
the US, for example, there is protection for "publicity
rights". In South Africa we talk of a "personality
right" that covers a right to identity, but there really is
very little law on this. In South Africa, the Advertising Standards
Authority Code can also be relevant. This provides that no
advertiser can portray a live celebrity without their consent,
unless that portrayal doesn't interfere with the
celebrity's right of privacy, and doesn't amount to
unjustifiable commercial exploitation.

In the UK, there aren't any image rights and it's
necessary to resort to the law of passing-off. A passing-off claim
depends on reputation and the likelihood of confusion. There was a
very big case a few years back
involving the singer Rihanna – Top Shop used a photo of
the singer on a T-shirt that it was selling, but it never bothered
to get her consent. Rihanna sued the store for passing-off and the
UK Court of Appeal upheld the claim, saying that there would be
consumer confusion, in the sense that many people would wrongly
believe that she had endorsed the product. The fact that Rihanna
has a history of product endorsement did seem to play a big role in
the court's decision.

The strongest right that a celebrity can have, however, will
always be a trade mark registration. In order to get a valid trade
mark registration, all you need is an intention to use the trade
mark on the particular goods or services, and this can be indirect
use through licensing or endorsement. It is possible to protect a
whole range of things through trade mark registrations, including
names, photos, likenesses, signatures, catchphrases, logos and
gestures. Once you have a trade mark registration, you can prevent
any unauthorised use of that trade mark, or any similar trade mark
that is likely to cause confusion.

I said that Ono seems to have succeeded in her dispute with the
Polish company because of financial clout rather than trade mark
rights, and this certainly happens from time to time. There has, in
fact, recently been a case in Croatia where a language school
succumbed to unspecified threats and stopped using billboard
adverts that featured a photo of Melania Trump alongside the words
"Just imagine how far you can go with a little bit of
English" – the school claimed that its intention was to
show how useful English-language skills are, rather than mock the
US first lady's English. Often, however, there won't be an
imbalance of power, and it will then all be down to trade mark
rights.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
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